In a perfect world, all of our favorite companies would get along merrily. But sadly, we do not live in a perfect world. Icon, the company behind some of the most lust-worthy vintage off-roaders and street machines in existence, is accusing toymaker Mattel of stealing the FJ40 Baja Edition design for a Hot Wheels die cast toy. According to the most recent Icon newsletter, Hot Wheels lifted a photo of the heavily modified FJ40, slathered a quick Photoshop job over the image and called it a day. Except Mattel reportedly never asked Icon for permission to use the image or the vehicle design in its marketing or products.
Icon reportedly reached out to Mattel to no avail. That's about when the custom builder turned to its lawyers, prompting the attorney for Hot Wheels to say the company wanted to settle the matter out of court. A month went by before Icon once again tried to reach out. Mattel allegedly dismissed Icon, effectively challenging the smaller company to try to sue the toy monolith if Icon thought it stood a chance.
Hot Wheels hasn't spoken out on the issue. With five of the tiny diecasts on our desk and five hundred in a box downstairs, we've had a life-long relationship with the toymaker. But that doesn't excuse the reported bully tactics. Here's hoping this one gets squared away sooner rather than later. Check out an excerpt from the Icon newsletter below.
UPDATE: Designer, Founder and Owner of Icon 4x4, Jonathan Ward, released the following statement to Autoblog.
The issue is that they stole the image, took many unique design details and trade dress elements unique to ICON, and used the Federally filed Trademark without permission, then tried to play bully to make the issue disappear. They offered us $1,500 dollars to go away. I know big fish like to dine on little fish, but I do not feel this is good business ethics. I reached out to HW about six months before they released the range of models and launched the series with my image on their website. After our cease and desist letter, they promptly removed the image. They never replied to my email, which had included that very same copy protected image. Also, I am not a rich man. My wife and I built this brand from nothing but sweat and tears. I am proud to employ skilled American workers and provide them a great place to work with fine benefits, and we take pride to build our vehicles with the best possible content. It adds up and they are expensive. I wish they were cheaper but we build the best we can, and then sell it at a fair and reasonable business margin. Plenty of companies start with a price target, then build to meet that. A lot of design and quality value gets lost that way.
- JW ICON
UPDATE 2: Hooniverse has received a response from Hot Wheels.
Now we have a less charming story related to how companies can be run. Whereas we have tried to build a company that is a true reflection of our passion and accountability, not all are built as such. As a lifetime fan of Hot Wheels, imagine our initial excitement when we received several emails from friends congratulating us on the Hot Wheels deal. "Hot wheels deal, what Hot Wheels deal?" , I said. So we went to their website and saw they were releasing a new FJ40 model. As I studied their details, and even their launch rendering, I quickly realized that they based it on our ICON FJ40 Baja Edition. Other than some ugly colors and logos, it was our design, trademark and trade dress. Actually, their photo was a quick rendering over a PR shot of me jumping one of our Baja's in the desert. You can even see my balding head still in the truck!
So then I innocently asked a friend who used to work there, "what's up?" He said they must have made an honest mistake, and advised me to reach out to the current Director of Design for Hot Wheels, Alec Tam. I sent him a few emails and never got a response. So then I called and got a belittling voicemail where he basically told me to take a hike and that there was no validity to my claim. So much for a friendly discussion... So after a few legal letters back and forth, their attorney said that they wished to settle this out of court, and they asked for thirty days to collect data related to how many had been distributed. So on day 31... we reached out to them again. This time they said if you think you have a claim, sue us. You guys are a small company and we are a big one, so go ahead and try! Sad to see such a great brand run in such a manner, isn't it? We lack the funds to pour into a legal case to defend our mark and ! I thought this story was worth sharing. Any TM lawyers out there interested in helping us right this wrong? Shame on you Hot Wheels! Consider these facts when you make your next relevant purchase...